Appeal 2007-2486
Application 10/429,369
Accordingly, we affirm the Examiner’s § 103(a) rejection of claim 6 over
Sorgenti in view of Gunnerman and Meyer.
35 U.S.C. § 112, 1ST PARAGRAPH, REJECTION: LACK OF
ENABLEMENT
The Examiner rejected claims 11-15 under 35 U.S.C. § 112, 1st
paragraph, as failing to comply with the enablement requirement (Answer
3). Specifically, the Examiner concluded that the claim phrase “in the
absence of an oxidizing agent” failed to enable one of ordinary skill in the
art to make or use the claimed invention because “it is unclear how a sulfur
compound and/or nitrogen compound [would] be converted to sulfones
and/or sulfoxides and oxidized nitrogen-containing compound[s],
respectively, without the presence of an oxygen containing compound (e.g.,
oxidizing agent)” (Answer 3).
Appellant argues that the claims are enabled because one of ordinary
skill in the art would understand “in the absence of an oxidizing agent” to
means without addition of an oxidizing agent (Br. 18-19).
We have considered Appellant’s argument and we are unpersuaded
for the reasons below.
A determination of whether a claimed invention is enabled is a
question of law based on underlying factual findings. In re Vaeck, 947 F.2d
488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); Atlas Powder Co. v. E.I.
du Pont de Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.
Cir. 1984). The standard for determining whether the specification meets
the enablement requirement is whether the experimentation needed to
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